Intellectual Property News
In a decision rendered by Singapore’s High Court on 20 December 2017, the High Court allowed an application by Novartis (Singapore) Pte Ltd (commenced under Section 44(1) of the Patents Act) and reversed the Registrar’s decision to grant correction to the Register in respect of corrections to priority application number of Bristol-Myers Squibb Pharma Company’s patents.
(a) Novartis (Singapore) Pte Ltd (Applicant)
(b) Bristol-Myers Squibb Pharma Company (Respondent)
The Respondent is the proprietor of various patents which concern pharmaceutical inventions (“the Singapore Patents”). The Respondent had commenced a suit against the Applicant after receiving notice that the Applicant was applying for a product licence under the Medicines Act, seeking a declaration that the acts for which the product licence was sought would infringe the Singapore Patents, and an injunction to prevent the same (“the High Court suit”).
In the High Court suit, the Respondent had claimed the priority date of 11 June 1988, derived from an earlier US patent application for the same/similar invention. The Applicant in its defence had argued that the Respondent was not entitled to rely on the claimed priority date as the document cited in support of the claimed priority date relates to a completely different and unrelated invention from those in the Singapore Patents. The Respondent subsequently investigated the prosecution history and discovered an error was made during the application process, i.e. the wrong earlier US patent application number was entered in the relevant forms.
In particular, instead of “US 60/088,981”, what was entered was “US 60/089,981”, the latter US patent application being a completely different invention titled “PAPER CARTON and BLANK THEREFOR” (“the Paper patent”). A copy of the Paper patent was also submitted as priority document at the point of filing an international patent application “PCT/99/13199” for the invention titled “CRYSTALLINE EFAVIRENZ” (“CEFA”). There was only a single digit difference in the US application numbers. On 20 November 2000, an application was made in Singapore for grant of the SG 77853 patent (Singapore national phase application). The error in the priority date document reference number was not detected and was copied over into the Singapore application. Subsequently on 2 December 2002, the Respondent filed 3 divisional patent applications. The incorrect priority document application number was not detected and was also adopted for the divisional applications, i.e. SG 111980, SG111981 and SG 134977.
The Respondent had then filed requests to the Registrar of Patents (“Registrar”) to correct the entries in the patents register (“Register”) to reflect the correct US patent application number in support of the claimed priority date. Request for corrections to the relevant patent application forms were initially made via the IPOS online portal but was unsuccessful. Upon receiving clarification from the Duty Registrar by telephone, the Respondent had then proceeded to file Form CM4 making the correction to the priority application number under Part 5 of the CM4 form, pursuant to Rule 58 of the Patents Rules. The Registrar granted the request and made the corrections.
The Applicant commenced the present action for rectification of the Register under Section 44 of the Patents Act, as it took the view that the Registrar should not have allowed the corrections, and argued that the corrections for SG 77853, SG 111980, SG111981 and SG 134977 should be reversed.
The Applicant relied on Section 44(1) of the Patents Act which states that “the court may on the application of any person aggrieved, order the register to be rectified by the making, or the variation or deletion, of any entry in it”, and submitted that it is an aggrieved person and that the Register should be rectified by reversing the decision and deleting the corrections in their entirety. Grounds relied upon by the Applicant included, inter alia:
(a) The filing of the requests was procedurally irregular as they should have been made under Rule 91 and not Rule 58 of the Patents Rules;
(b) The errors for which corrections were sought were not simple and obvious errors; and
(c) There was undue delay on the Respondent’s part in making the requests.
The Respondent submitted that the Applicant failed to make out a case under Section 44 of the Patents Act. It asserted that the error was clerical in nature, no prejudice was caused and the error would have been obvious to a reader on a proper inspection of the file record and prosecution history. It denied bad faith and the assertion that the wrong procedure had been used.
The main issue was whether the request for correction was properly brought and granted under Rule 58 of the Patents Rules.
Section 42(2)(d) of the Patents Act states that the Patents Rules may make provision for the correction of errors in the Register and in any document filed at the Registry in connection with registration. Section 107 of the Patents Act, on the other hand, provides that the Registrar may correct any error of translation or transcription, clerical error or mistake in any specification of a patent or application for a patent or any document such an application. Section 42(2)(d) covers (i) errors in the register; and (ii) errors in any document filed at the Registry in connection with registration. Section 107, conversely, covers (i) errors in the specification; (ii) errors in an application for a patent; and (iii) errors in any document filed in connection with the patent or the application.
In turn, Rule 58 of the Patents Rules provides that requests for correction of errors in the Register and in any document filed in connection thereto shall be made on Form CM4. Rule 58 appears to flow from Section 42(2)(d). Rule 91 which derives from Section 107 of the Patents Act provides that requests for correction of errors in patents, applications and in any document filed in connection thereto shall be made on Form CM4.
Rule 58 refers to requests to correct errors in the Register or in any document filed at the Registry in connection with registration. However, the request for patent by way of Form PF1, was held to be a document that is in connection with the application for grant of a patent. It was not, as such, a document filed at the Registry in connection with registration. It followed that documents filed in connection with the patent or application for a patent fell under Rule 91 instead.
Nonetheless, the High Court recognised that in any event, the Respondent simply requested correction of the entries in the Register, and it was clear on the basis of Section 42(2)(d) of the Patents Act that the Respondent was entitled to use Rule 58 to make this request. The High Court also acknowledged the importance of correcting the entry in the Register, since the entries represent the “public face” of Singapore patents. It noted that Rule 91 on the other hand does not deal with requests for corrections to an entry in the Register.
However, the High Court ultimately decided that the discretion under Rule 58 was wrongly exercised and that the Registrar should not have allowed the correction. There was no error in the entries in the Register. The entries accurately set out the earlier application number as contained in the published applications and forms. It followed that the Applicant as an aggrieved party had the right under Section 44(1) of the Patents Act to apply for rectification of the Register by deletion of the correction that was made to the Register.
The High Court went on to hold that even if a request had been made to correct the entries in the forms under Rule 91, the request came far too late, and in any case, the request was not supported by exceptional grounds:
(a) Request for corrections, whether in respect of the forms or the Register was made very late. Even though the original error was clerical in nature and dates all the way back to the filing of the international application on 10 June 1999, an important point to consider was the impact or effect of the error (and the late request for correction) on the rights and interests of third parties. Third parties need “a reliable legal basis for the economic decisions they have to take”, e.g. whether to commence revocation proceedings post-grant. Such third parties may need to consider their position as from date of publication since he will be on notice that the patent is “pending”, and if that patent is granted, it may then have an impact on the third party as from the date of publication of the application.
(b) The errors were also not obvious or immediately apparent from an inspection of the entries in the Register. A third party looking at the Singapore applications as published might not have any reason to suspect that there was an error in the declared priority details. The name or title of the invention associated with the erroneous application number that was entered in the forms was not set out in the forms or the applications as published. He would only have cause to suspect something was amiss if he inspected the patent file and discovered that the application number referred to the Paper patent. Even if the court assumes that the diligent experienced patent agent would have been able to discover the correct number and patent document by conducting appropriate searches – time and effort would have to be expended. Further, under Rule 91(2), it is only when the request for correction relates to a specification that the correction shall not be made “unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as a correction.” There was no express provision that the error and correction should be obvious on the face of the application of the patent when the request relates to something other than the specification.
Patent agents should be cautious when entering priority data details in patent forms. As seen from the above case, a small mistake as to merely a single digit in the priority application number could have huge consequences on the patent applicant’s rights. Patent agents and/or applicants should bear in mind the importance of correcting errors as soon as reasonably practicable.
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